(114) Information Disclosure Statements
May Be Filed Without Copies of
U.S. Patents and Published Applications in
Patent Applications filed after June 30, 2003
Background
The U.S. Patent and Trademark Office (USPTO or Office)
regulations concerning Information Disclosure Statements (IDSs)
currently require that copies of the cited references be submitted with
the IDS listing. See 37 CFR 1.98 (a)(2). In a prior notice in the
Official Gazette this requirement was partially waived with respect to
U.S. patents and U.S. patent application publications when an applicant
submitted an IDS using the Office's electronic filing system (as an
electronic IDS, eIDS). See Legal Framework for the Use of the
Electronic Filing System, 1263 Off. Gaz. Pat. Off. 60, 10/8/2002,
Part V.
All U.S. applications1 filed after June 30, 2003
are stored in electronic form in the Office's Image File Wrapper (IFW)
system.2 IDSs submitted for these electronic applications
are processed by Office staff to create an electronic link which
permits cited U.S. patents and U.S. patent application publications to
be conveniently viewed by examiners through the Office's patent search
system. This feature enables the Office to avoid scanning these
documents into IFW, obviating the need for their submission.
Waiver
The Office hereby waives the requirement under 37 CFR 1.98
(a)(2)(i) for submitting a copy of each cited U.S. patent and each U.S.
patent application publication for all U.S. national patent
applications filed after June 30, 2003 and for all international
applications that have entered the national stage under 35 USC 371
after June 30, 2003. See 37 CFR 1.491(b). For all patent
applications filed on or before June 30, 2003, copies of cited U.S.
patents and patent application publications are still required unless
an eIDS is filed.
Applicants are still required to submit copies of foreign
patent documents and non-patent literature in accordance with 37 CFR
1.98(a)(2).
FOR FURTHER INFORMATION CONTACT:
Questions concerning this waiver may be submitted to Jay Lucas
by e-mail at Jay.Lucas@uspto.gov or by telephone at (703) 308-6868.
Comments may also be submitted by mail addressed to: Commissioner for
Patents, Box Comments - Patents, Post Office Box 1450, Alexandria, VA
22313-1450, or by facsimile to (703) 305-2919, marked to the attention
of Jay Lucas.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
1 Except in special situations, such as in applications under secrecy order
or containing national security markings.
2 See Notification of United States Patent and Trademark Office Patent
Application Records being Stored and Processed in Electronic Form, 1271
Off. Gaz. Pat. Off. 100, 6/17 2003.
[1273 OG 55]